Ex Parte Hao et al

Patent Trial and Appeal Board

Aug 21, 2018

13450529 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/450,529 04/19/2012
59582 7590 08/21/2018
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Ling Hao
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
29881-00736 1453
EXAMINER
BAREFORD, KATHERINE A
ART UNIT PAPER NUMBER
1718
MAIL DATE DELIVERY MODE
08/21/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LING HAO, DAVID P. HARTRICK,
LEE A. CHASE, ALAND. FANTA, DANIEL W. IRVINE,
YONG ZHANG, and MAOSHI GUAN
Appeal2017-009413
Application 13/450,529
Technology Center 1700
Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3, 4, 6, 8-10, 12-16, 18, 20, 22-26, 29, and 31-
34. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 In this Opinion, we refer to the Specification filed April 19, 2012
("Spec."), the Non-Final Office Action dated May 18, 2016 ("Non-Final
Act."), the Appeal Brief filed January 18, 2017 ("Appeal Br."), the
Examiner's Answer dated April 19, 2017 ("Ans."), the Reply Brief filed
June 19, 2017 ("Reply Br."), and the Declaration of Alan Fanta filed March
18, 2013 ("Fanta Deel.").
2 The real party in interest is identified as Lacks Industries, Inc. Appeal Br.
3.
Appeal2017-009413
Application 13/450,529
The invention relates to a method of forming a decorative metal finish
on a plastic or other non-conductive surface "that uses less metal than
current conventional chrome plating techniques" and "that requires less
surface roughening than current conventional chrome plating techniques."
Spec. ,r,r 11, 13. Claim 1 is illustrative ( disputed limitations italicized):
1. A method of preparing an injection molded plastic article
with a decorative metal finish, comprising:
providing an injection molded plastic article including at
least one plastic surface to receive the decorative metal
finish;
lightly roughening said at least one plastic surface to create
a light surface roughness of said at least one plastic swface
of from about 2-100 nm root mean square (rms) roughness;
non-electrolytically depositing a thin metal layer having a
thickness of about 5 0 to 5 00 nm directly on said at least one
lightly roughened plastic surface; and
depositing at least one top protective translucent layer
directly on said thin metal layer.
Appeal Br. 24 (Claims Appendix). Independent claims 16 and 26 are similar
to claim 1, but recite "electrolessly" instead of "non-electrolytically" ( claim
16) and "a plurality of plastic surfaces" instead of "at least one plastic
surface to receive the decorative metal finish" ( claim 26). Id. at 26-27, 28-
29 (Claims Appendix).
The Examiner maintains (Ans. 2) the following rejections under 35
U.S.C. § 103 (Final Act. 6-30):
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Application 13/450,529
1. Claims 1, 3, 4, 6, 8, 9, 16, 18, 20, 24, 26, 29, and 33 over Hao 3 in
view ofMoribe, 4 Wakizaka '059, 5 Klinger, 6 Poole,7 and, optionally,
Aufderheide. 8
2. Claims 10, 12-15, 22, 23, 25, 31, 32, and 34 over Hao in view of
Moribe, Wakizaka '059, Klinger, Poole, and, optionally Aufderheide, as
applied in Rejection 1, in further view ofWakizaka '625. 9
3. Claims 1, 6, 8, 9, 16, 18, 20, 24, 26, 29, and 33 over Hao in view of
Moribe, Wakizaka '059, Shotton, 10 Poole, and, optionally, Aufderheide.
4. Claims 3 and 4 over Hao in view ofMoribe, Wakizaka '059,
Shotton, Poole, and, optionally, Aufderheide, as applied in Rejection 3, in
further view of or as evidenced by Seibel. 11
5. Claims 10, 12-15, 22, 23, 25, 31, 32, and 34 over Hao in view of
Moribe, Wakizaka '059, Shotton, Poole, and, optionally Aufderheide, as
applied in Rejection 3, in further view of Wakizaka '625.
OPINION
After reviewing the positions and evidence presented by both
Appellants and the Examiner, we affirm the stated rejections for the reasons
provided in the Non-Final Office Action and the Answer. We add the
following primarily for emphasis.
3 Hao et al., US 2002/0197492 Al, pub. Dec. 26, 2002 ("Hao").
4 Moribe et al., US 2005/0166218 Al, pub. July 28, 2005 ("Moribe").
5 Wakizaka, US 2005/0153059 Al, pub. July 14, 2005 ("Wakizaka '059").
6 Klinger et al., US 3,445,350, issued May 20, 1969 ("Klinger").
7 Poole et al., US 4,833,038, issued May 23, 1989 ("Poole").
8 Aufderheide et al., US 2003/0197688 Al, pub. Oct. 23, 2003
("Aufderheide").
9 Wakizaka, US 2006/0257625 Al, pub. Nov. 16, 2006 ("Wakizaka '625").
10 Shotton et al., US 3,597,336, issued Aug. 3, 1971 ("Shotton").
11 Seibel, US 4,783,247, issued Nov. 8, 1988 ("Seibel").
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Application 13/450,529
The Examiner finds that claims 1, 3, 4, 6, 8-10, 12-16, 18, 20, 22-26,
29, and 31-34 would have been obvious to one of ordinary skill in the art at
the time of the invention for the reasons stated on pages 6-34 of the Non-
Final Office Action. Appellants argue the patentability of independent
claims 1, 16, and 26 as a group and rely on those same arguments for the
dependent claims. Appeal Br. 10-21. Therefore, we select claim 1 as
representative; claims 3, 4, 6, 8-10, 12-16, 18, 20, 22-26, 29, and 31-34
will stand or fall with claim 1 based upon the lack of arguments directed to
the individual claims and the subsidiary rejections. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Appellants argue that the Examiner erred in rejecting claim 1 over
Hao together with the secondary references because, even though Hao does
not teach the specific roughness conditioning for the surface of a plastic
article for electroless deposition of a metal coating, Hao is "exemplary of a
prior art method which disadvantageously utilized an aggressive roughening
of the surface to prepare the article with a decorative metal finish." Appeal
Br. 13 (citing Fanta Deel. ,r,r 6, 8; Hao ,r 12). Appellants further contend
that, even though Hao discloses a metal layer thickness range down to 300
nm and overlapping the claimed range, "Hao passively mentions a portion of
its thickness range which is inoperative in Hao" because "Hao is exemplary
of the conventional prior art which teaches depositing a thick metal layer on
an aggressively roughened plastic substrate." Id. at 14 (citing Hao ,r 14;
Fanta Deel. ,r,r 6, 8; Spec. ,r 6). Appellants assert the following sentence in
Hao, together with the Fanta Declaration and Appellants' Specification,
evidences that a thick layer of metal is applied to an aggressively roughened
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surface to provide adherence and durability to withstand high temperatures
and stresses:
[p ]referably, the thickness of the electrolessly deposited coating
is at least about 40 micro-inches (1.0 micrometers), more
preferably at least 60 micro-inches (1.5 micrometers), in order
to achieve uniform and consistent quality of the
electrodeposited [ coating( s)] during subsequent processing.
Id. (quoting Hao ,r 14).
Appellants also assert that Moribe, Wakizaka '059, Klinger, and/or
Shotton do not suggest modifying Hao to incorporate a thin metal layer on a
lightly roughened surface absent impermissible hindsight. Id. at 15.
According to Appellants, Moribe discloses depositing a magnetic layer of
about 800 nm on a lightly roughened surface, which is not a thin metal layer
and any thinner magnetic layer would render Moribe unfit for its intended
purpose. Id. at 15-16 (citing Moribe ,r 27). Similarly, Wakizaka '059 is
said to disclose depositing a thick metal layer on lightly roughened (200 nm
or less) surface of resin material because it discloses "an extremely broad"
range of generally 0.5 to 100 µm and "preferably 1 to 70 µm." Id. at 16-17
(quoting Wakizaka '059 ,r 128). Appellants further distinguish Wakizaka
'059 on the basis that the metal layer is not deposited directly on the
roughened plastic surface as required by claim 1 because it includes
additional steps of providing initiator layers of a compound. Id. at 17-18
(citing Wakizaka '059 ,r 119).
Regarding Klinger and Shotton, Appellants assert that neither
discloses lightly roughening the pre-conditioned surface, therefore neither
discloses depositing a thin metal layer on a lightly roughened surface. Id. at
18-19. Because Poole and Aufderheide are cited for disclosing a protective
coating directly on the electroless plated layer, Appellants argue that neither
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cures the alleged deficiencies of the cited prior art. Id. at 19. Appellants
assert that because Appellants' process "goes against [the] conventional state
of the art" it "surprisingly provides a high quality finish with excellent
durability." Id. ( citing Fanta Deel. ,r,r 8, 9; Spec. ,r,r 6, 19).
The Examiner responds that Appellants' evidence that Hao' s method
requires aggressive roughening is in the form of opinion evidence from the
Specification and an inventor with an interest in the outcome, neither of
which provides any evidence or factual support for the opinions expressed
therein. Ans. 7-8. According to the Examiner, the opposing evidence is the
disclosures ofMoribe, Hao, Poole, and Wakizaka '059, which teach that low
roughness can be sufficient to properly adhere electroless plating, that thin
electroless plating can be provided in thicknesses that include 500 nm or
less, and that thick layers are not needed for durability when a protective
coating is used. Id. at 9 (citing Moribe ,r 33; Hao ,r 14; Poole 1:5-35, 6:29-
47; Wakizaka '059 ,r,r 119-20, 127-28).
Regarding the assertion that Hao's method requires aggressive
roughening, the Examiner further responds that there is no teaching of any
specific roughness in Hao and that the rejection is over the combination of
Moribe' s teaching a lightly roughened surface with Hao' s disclosure of
electrolessly depositing a coating in a range of 300-1900 nm, which
combination suggests the claimed roughness and thickness features. Id. at
10 ( citing Hao ,r 14 ). The Examiner finds that Hao' s disclosure of preferred
thicker ranges for quality of electrodeposited coating(s) in subsequent
processing, i.e., for further electrodeposition, merely evidences more
preferred ranges and no inoperable ranges as asserted by Appellants. Id. at
11. The Examiner further finds that there is no need of such further
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electrodeposition processing in view of Poole's teaching to provide a
protective coating directly on the electro less layer. Id. ( citing Poole 6:29--
32).
The Examiner also responds that the example thickness in Moribe is
within the range taught by Hao, indicating that the coatings in the range of
Hao would be expected to adhere to the nanoroughened surface of Moribe
and, because Moribe does not limit the coating thickness, thinner coatings
would also have more of an expectation of adhering than thicker coatings
due to less pull on the substrate. Id. at 12. Regarding the thickness of
Mori be' s magnetic layer affecting the magnetic field generated, the
Examiner finds that that Moribe' s disclosure suggests varying the thickness
as long as the desired activity is provided. Id. at 13 ( citing Moribe ,r 23).
The Examiner also responds that the principle of operation of Hao would not
be changed by providing a coating thickness within the range taught by Hao
and the roughness described by Moribe, since decorative or functional
plating would still be provided. Id. The Examiner also finds that roughness
is a desirably controlled feature that can be in the nanometer range, as
evidenced by the cited art. Id. at 14--15 (citing Wakazika '059 ,r 128 and
Klinger and Shotton for teaching roughness and conditioning can be
provided in a controlled fashion).
Appellants' arguments are not persuasive of error because
Appellants concede that Hao does not explicitly require a specific
roughening. Appeal Br. 13 ("as previously recognized by Page 12 of the
Office Action mailed October 17, 2012, 'Hao does not teach the specific
roughness ... of the surface after roughening"'). Appellants' contention
that Hao teaches the aggressively roughened surface that the Specification
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and Fanta Declaration refer to as a conventional process (Reply Br. 3--4;
Appeal Br. 13-14) is not persuasive, because Appellants' evidence consists
of conclusory statements regarding Hao in the Fanta Declaration and general
statements that do not address Hao' s disclosure specifically in the
Specification. In each of paragraphs 6 and 8 of the Fanta Declaration, the
purported conventional method of preparing an article with a decorative
metal finish is described and then followed by an assertion that Hao is an
example of this purported convention. See Fanta Deel. ,r 6 ("[Hao] is one
example of this prior accepted thinking of an aggressively roughened
surface"), ,r 8 ("those of ordinary skill in the art have long believed and
taught that to successfully and durably plate metals on plastic substrates, the
underlying substrate must be aggressively roughened or etched ... ( e.g.
[Hao])"). The Fanta Declaration provides no explanation or support for
concluding that Hao indeed requires an aggressively roughened surface. In
addition, neither the Fanta Declaration nor arguments in the Appeal Brief
explain why the purported conventional method described in Appellants'
Specification also describes Hao' s process.
In assessing the probative value of declaratory evidence, one must
consider the nature of the matter sought to be established as well as the
strength of the opposing evidence. In re Oelrich, 579 F.2d 86, 91 (CCPA
1978). Although opinion testimony must be considered and generally is
entitled to some weight, a lack of objective support for expert opinion "may
render the testimony of little probative value in a validity determination."
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,294
(Fed. Cir. 1985). This holds true in patentability determinations as well. See
In re Altenpohl, 500 F.2d 1151, 1158 (CCPA 1974) (lack of factual support
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rendered an affidavit of little probative value in overcoming obviousness
rejection). The Examiner properly considered the declaratory opinion in
light of the opposing evidence, which includes the prior art references. Ans.
8-10. Mr. Fanta's asserted qualifications as a skilled artisan in the art of
metal plating of surfaces for decorative purposes (Reply Br. 5) do not entitle
the conclusory testimony regarding Hao to such probative weight that it
would overshadow the weight of the other evidence; there is no requirement
that a fact finder credit unexplained testimony of an expert. Rohm and Haas
Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997).
In addition, Appellants' distinctions over the prior art (Appeal Br. 13-
18) are not persuasive of error because they seek to limit the teachings of the
prior art to their preferred ranges and examples. In a determination of
obviousness, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. Merck & Co.,
Inc. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the [prior
art] patent discloses a multitude of effective combinations does not render
any particular formulation less obvious."). Moreover, "a reference is not
limited to the disclosure of specific working examples." In re Mills, 470
F.2d 649,651 (CCPA 1972) (citation omitted). Based on these principles,
the Examiner's findings that Hao discloses a metal layer thickness range that
overlaps the range recited in claim 1 and that Moribe discloses a roughened
surface range that overlaps the range recited in claim 1 are supported by the
preponderance of the evidence cited in this appeal record.
Appellants' argument that Moribe, Poole, and Wakizaka '059 should
have less weight because they are non-analogous processes related to
magneto-optical recording media, UV curable coatings, and multi-layered
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circuit boards (Reply Br. 5---6) is not persuasive of error because Appellants
merely address the first step in an analogous art analysis by asserting that the
references are in different fields of endeavor from that of the inventors,
which is said to be decorative metal finishes such as employed in the
automotive industry. Reply Br. 6. The PTO and its reviewing courts have
developed and applied a two-step "test" to determine whether a prior art
reference is "analogous" art and therefore may be used as evidence with
respect to a question of obviousness under § 103. In re Wood, 599 F .2d
1032 (CCPA 1979).
Step 1 requires an answer to the following question: "Is the reference
within the field of the inventor's endeavor?" If the answer is "yes," then the
reference is "analogous" and therefore may be used as evidence. If the
answer is "no," then Step 2 requires an answer to the following question: "Is
the reference reasonably pertinent to the particular problem the inventor was
trying to solve?" If the answer is "yes," then the reference is analogous and
therefore may be used as evidence.
Appellants provide no basis for us to determine that the cited prior art
references are not reasonably pertinent to the particular problem the inventor
was trying to solve of electrolessly depositing a thin metal layer on a lightly
roughened surface. Spec.§ 19. Moreover, each ofMoribe, Poole, and
Wakizaka '059 are directed to electroless metal plating a layer to a resin
article. Ans. 7, 8, 12; Moribe ,r,r 29, 30; Wakizaka '059 ,r,r 93, 119, 123-24;
Poole 1:5-35, 6:15--45. Appellants do not dispute the Examiner's factual
findings regarding the explicit disclosures of Moribe, Poole, and Wakizaka
'059. Therefore, based on the cited record in this Appeal, we do not find
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Appellants' non-analogous art argument persuasive of error by the
Examiner.
Paragraphs 8 and 9 of the Fanta Declaration and paragraphs 11-16
and 19 of the Specification that allegedly show "Appellant unexpectedly
discovered" excellent adhesion of a finish and "significant advantages and
new results" (Reply Br. 7) do not adequately support Appellants'
patentability argument because they are conclusive and lack objective
support. The Fanta Declaration refers to "significant advantages over
existing processes, including in terms of cost and productivity" (Fanta Deel.
,r 8) and states "[ w ]e were surprised to discover that this combination
yielded excellent adhesion of finish despite the absence of an aggressively
roughed substrate surface" (Fanta Deel. ,r 9) without evidence to establish
significant improvement over the closest prior art. Similarly, paragraphs
11-16 of the Specification list advantages of the disclosed method and
paragraph 10 asserts "an improved decorative metal finish" and "[t]he light
roughening of the non-conductive surface and the thin metal layer deposited
thereover surprisingly provides a high quality finish with excellent durability
for high stress applications" without comparison to the closest prior art to
support unexpected or surprising results from the claimed method.
Whether an invention has produced unexpected results is a question of
fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no
hard-and-fast rule for determining whether evidence of unexpected results is
sufficient to rebut a prima facie case of obviousness." Kao Corp. v.
Unilever US., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re
Dillon, 919 F.2d 688, 692-93 (Fed. Cir.1990) ("[e]ach situation must be
considered on its own facts."). However, a party asserting unexpected
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results as evidence of nonobviousness has the burden of proving that the
results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997). "[I]t is not enough to show that results are obtained which differ from
those obtained in the prior art: that difference must be shown to be an
unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Therefore, we are not persuaded that the Examiner erred in giving little to no
weight to Appellants' evidence of secondary considerations of non-
obviousness and in determining that claim 1 would have been obvious in
view of the cited prior art.
In sum, we affirm the Examiner's rejection of claim 1 as obvious over
the cited prior art.
CONCLUSION
We affirm all of the Examiner's rejections of claims 1, 3, 4, 6, 8-10,
12-16, 18, 20, 22-26, 29, and 31-34.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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